Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1,2,4,8,10,11 and 14 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Jeong (KR 10-2009-0051565).
Jeong teaches (see Figures 2 and 3):
A method for installing an injector cup into a diesel engine, comprising:
providing an injector cup (20) comprising a barrel (see Figure 3, lowest end of injector cup 20, having threads) having threads (N) at a distal end and at least one O-ring (25) near a proximal end wherein the barrel does not include a conical portion;
inserting the injector cup into an injector cavity bore of a cylinder head, wherein the cylinder head comprises insertion threads (N) at the bottom of the cylinder head;
tightening the injector cup into the injector cavity bore via engagement between the insertion threads and the threads of the injector cup in a manner that prevents floating of the injector cup within the cylinder head and in a manner that enables the O-rings to engage an injector cavity wall (not numbered).
And further comprising: creating a seal between the injector cavity bore and a coolant chamber (5), wherein the seal is created by the engagement of the O-ring with the injector cavity wall and the seal prevents leakage of coolant into the fuel and prevents leakage of fuel into the coolant. See the attached translation which teaches coolant passages (5,7), that the injector cup (tube 20) is formed from stainless steel (bottom of page 3 of translation), that the injector cup (20) includes a plurality of cavities (33) at the proximal end for insertion of the injector cup (20) into the cylinder head (1).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3, 5-7, 9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeong (KR 10-2009-0051565, as above). Jeong applies as above but appears to be silent with respect to torqueing requirements.
The torqueing requirements for the injector cup and positioning of the O-rings is considered to be a matter of design choice.
Furthermore, it should be noted that the “recession cutting” step is already well known in the art as mentioned at applicant’s specification paragraph 59 and therefore it would have been obvious to one of ordinary skill in the art to have included such a step in Jeong so as to ensure that the injector would be seated correctly in the injector cup.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11519371. Although not identical, they are such that they would have been obvious in light of the claimed subject matter of US Patent 11519371.
Allowable Subject Matter
Claims 15-18 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICK R SOLIS whose telephone number is (571)272-4853. The examiner can normally be reached Monday - Friday 9 -5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Logan Kraft can be reached on (571) 270-5065. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICK R SOLIS/Primary Examiner, Art Unit 3747